PARK 'N FLY, INC.
v.
DOLLAR PARK AND FLY, INC.
469 U.S. 189 (1985)
JUSTICE O'CONNOR delivered the opinion of the Court.
In this case we consider whether an action to enjoin the infringement of an incontestable
trade or service mark may be defended on the grounds that the mark is merely descriptive. We
conclude that neither the language of the relevant statutes nor the legislative history supports
such a defense.
I
Petitioner operates long-term parking lots near airports. After starting business in St.
Louis in 1967, petitioner subsequently opened facilities in Cleveland, Houston, Boston,
Memphis, and San Francisco. Petitioner applied in 1969 to the United States Patent and
Trademark Office (Patent Office) to register a service mark consisting of the logo of an airplane
and the words "Park'N Fly." 1 The registration issued in August 1971. Nearly six years later,
petitioner filed an affidavit with the Patent Office to establish the incontestable status of the mark.
As required by § 15 of the Trademark Act of 1946 (Lanham Act), 60 Stat. 433, as amended, 15
U. S. C. § 1065, the affidavit stated that the mark had been registered and in continuous use for
five consecutive years, that there had been no final adverse decision to petitioner's claim of
ownership or right to registration, and that no proceedings involving such rights were pending.
Incontestable status provides, subject to the provisions of § 15 and § 33(b) of the Lanham Act,
"conclusive evidence of the registrant's exclusive right to use the registered mark . . . ." § 33(b),
15 U. S. C. § 1115(b).
Respondent also provides long-term airport parking services, but only has operations in
Portland, Oregon. Respondent calls its business "Dollar Park and Fly." Petitioner filed this
infringement action in 1978 in the United States District Court for the District of Oregon and
requested the court permanently to enjoin respondent from using the words "Park and Fly" in
connection with its business. Respondent counterclaimed and sought cancellation of petitioner's
mark on the grounds that it is a generic term. See § 14(c), 15 U. S. C. § 1064(c). Respondent also
argued that petitioner's mark is unenforceable because it is merely descriptive. See § 2(e), 15 U.
S. C. § 1052(e). As two additional defenses, respondent maintained that it is in privity with a
Seattle corporation that has used the expression "Park and Fly" since a date prior to the
registration of petitioner's mark, see § 33(b)(5), 15 U. S. C. § 1115(b)(5), and that it has not
infringed because there is no likelihood of confusion. See § 32(1), 15 U. S. C. § 1114(1).
1
The Trademark Act of 1946 (Lanham Act), 60 Stat. 427, as amended, 15 U. S. C. § 1051 et seq., generally applies
the same principles concerning registration and protection to both trade and service marks. See § 3, 15 U. S. C. §
1053. The Lanham Act defines a trademark to include "any word, name, symbol, or device or any combination
thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those
manufactured or sold by others." § 45, 15 U. S. C. § 1127. A service mark is "a mark used in the sale or advertising
of services to identify the services of one person and distinguish them from the services of others." Ibid.
1
After a bench trial, the District Court found that petitioner's mark is not generic and
observed that an incontestable mark cannot be challenged on the grounds that it is merely
descriptive. App. 75. The District Court also concluded that there was no evidence of privity
between respondent and the Seattle corporation. App. 76. Finally, the District Court found
sufficient evidence of likelihood of confusion. App. 76. The District Court permanently enjoined
respondent from using the words "Park and Fly" and any other mark confusingly similar to
"Park'N Fly." App. 77.
The Court of Appeals for the Ninth Circuit reversed. 718 F. 2d 327 (1983). The District
Court did not err, the Court of Appeals held, in refusing to invalidate petitioner's mark. Id., at
331. The Court of Appeals noted, however, that it previously had held that incontestability
provides a defense against the cancellation of a mark, but it may not be used offensively to
enjoin another's use. Ibid. Petitioner, under this analysis, could obtain an injunction only if its
mark would be entitled to continued registration without regard to its incontestable status. Thus,
respondent could defend the infringement action by showing that the mark was merely
descriptive. Based on its own examination of the record, the Court of Appeals then determined
that petitioner's mark is in fact merely descriptive, and therefore respondent should not be
enjoined from using the name "Park and Fly." Ibid.
The decision below is in direct conflict with the decision of the Court of Appeals for the
Seventh Circuit in Union Carbide Corp. v. Ever-Ready, Inc., 531 F. 2d 366, cert. denied, 429 U.
S. 830 (1976). We granted certiorari to resolve this conflict, 465 U. S. 1078 (1984), and we now
reverse.
II
Congress enacted the Lanham Act in 1946 in order to provide national protection for
trademarks used in interstate and foreign commerce. S. Rep. No. 1333, 79th Cong., 2d Sess., 5
(1946). Previous federal legislation, such as the Federal Trademark Act of 1905, 33 Stat. 724,
reflected the view that protection of trademarks was a matter of state concern and that the right to
a mark depended solely on the common law. S. Rep. No. 1333, at 5. Consequently, rights to
trademarks were uncertain and subject to variation in different parts of the country. Because
trademarks desirably promote competition and the maintenance of product quality, Congress
determined that "a sound public policy requires that trademarks should receive nationally the
greatest protection that can be given them." Id., at 6. Among the new protections created by the
Lanham Act were the statutory provisions that allow a federally registered mark to become
incontestable. §§ 15, 33(b), 15 U. S. C. §§ 1065, 1115(b).
The provisions of the Lanham Act concerning registration and incontestability distinguish
a mark that is "the common descriptive name of an article or substance" from a mark that is
"merely descriptive." §§ 2(e), 14(c), 15 U. S. C. §§ 1052(e), 1064(c). Marks that constitute a
common descriptive name are referred to as generic. A generic term is one that refers to the
genus of which the particular product is a species. Abercrombie & Fitch Co. v. Hunting World,
Inc., 537 F. 2d 4, 9 (CA2 1976). Generic terms are not registrable, and a registered mark may be
canceled at any time on the grounds that it has become generic. See §§ 2, 14(c), 15 U. S. C. §§
1052, 1064(c). A "merely descriptive" mark, in contrast, describes the qualities or characteristics
of a good or service, and this type of mark may be registered only if the registrant shows that it
has acquired secondary meaning, i. e., it "has become distinctive of the applicant's goods in
commerce." §§ 2(e), (f), 15 U. S. C. §§ 1052(e), (f).
2
This case requires us to consider the effect of the incontestability provisions of the
Lanham Act in the context of an infringement action defended on the grounds that the mark is
merely descriptive. Statutory construction must begin with the language employed by Congress
and the assumption that the ordinary meaning of that language accurately expresses the
legislative purpose. See American Tobacco Co. v. Patterson, 456 U. S. 63, 68 (1982). With
respect to incontestable trade or service marks, § 33(b) of the Lanham Act states that
"registration shall be conclusive evidence of the registrant's exclusive right to use the registered
mark" subject to the conditions of § 15 and certain enumerated defenses. 2 Section 15
incorporates by reference subsections (c) and (e) of § 14, 15 U. S. C. § 1064. An incontestable
mark that becomes generic may be canceled at any time pursuant to § 14(c). That section also
allows cancellation of an incontestable mark at any time if it has been abandoned, if it is being
used to misrepresent the source of the goods or services in connection with which it is used, or if
it was obtained fraudulently or contrary to the provisions of § 4, 15 U. S. C. § 1054, or §§ 2(a)(c), 15 U. S. C. §§ 1052(a)-(c).3
One searches the language of the Lanham Act in vain to find any support for the
offensive/defensive distinction applied by the Court of Appeals. The statute nowhere
distinguishes between a registrant's offensive and defensive use of an incontestable mark. On the
contrary, § 33(b)'s declaration that the registrant has an "exclusive right" to use the mark
indicates that incontestable status may be used to enjoin infringement by others. A conclusion
that such infringement cannot be enjoined renders meaningless the "exclusive right" recognized
by the statute. Moreover, the language in three of the defenses enumerated in § 33(b) clearly
contemplates the use of incontestability in infringement actions by plaintiffs. See §§ 33(b)(4)-(6),
15 U. S. C. §§ 1115(b)(4)-(6).
The language of the Lanham Act also refutes any conclusion that an incontestable mark
may be challenged as merely descriptive. A mark that is merely descriptive of an applicant's
goods or services is not registrable unless the mark has secondary meaning. Before a mark
2
That the registered mark is being used, by or with the permission of the registrant or a person in privity with the
registrant, so as to misrepresent the source of the goods or services in connection with which the mark is used; or
"(4) That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a trade or
service mark, of the party's individual name in his own business, or of the individual name of anyone in privity with
such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe to users
the goods or services of such party, or their geographic origin; or
"(5) That the mark whose use by a party is charged as an infringement was adopted without knowledge of the
registrant's prior use and has been continuously used by such party or those in privity with him from a date prior to
registration of the mark under this chapter or publication of the registered mark under subsection (c) of section 1062
of this title: Provided, however, That this defense or defect shall apply only for the area in which such continuous
prior use is proved; or
"(6) That the mark whose use is charged as an infringement was registered and used prior to the registration under
this chapter or publication under subsection (c) of section 1062 of this title of the registered mark of the registrant,
and not abandoned: Provided, however, That this defense or defect shall apply only for the area in which the mark
was used prior to such registration or such publication of the registrant's mark; or
"(7) That the mark has been or is being used to violate the antitrust laws of the United States."
3
Sections 2(a)-(c) prohibit registration of marks containing specified subject matter, e. g., the flag of the United
States. Sections 4 and 14(e) concern certification marks and are inapplicable to this case.
3
achieves incontestable status, registration provides prima facie evidence of the registrant's
exclusive right to use the mark in commerce. § 33(a), 15 U. S. C. § 1115(a). The Lanham Act
expressly provides that before a mark becomes incontestable an opposing party may prove any
legal or equitable defense which might have been asserted if the mark had not been registered.
Ibid. Thus, § 33(a) would have allowed respondent to challenge petitioner's mark as merely
descriptive if the mark had not become incontestable. With respect to incontestable marks,
however, § 33(b) provides that registration is conclusive evidence of the registrant's exclusive
right to use the mark, subject to the conditions of § 15 and the seven defenses enumerated in §
33(b) itself. Mere descriptiveness is not recognized by either § 15 or § 33(b) as a basis for
challenging an incontestable mark.
The statutory provisions that prohibit registration of a merely descriptive mark but do not
allow an incontestable mark to be challenged on this ground cannot be attributed to inadvertence
by Congress. The Conference Committee rejected an amendment that would have denied
registration to any descriptive mark, and instead retained the provisions allowing registration of a
merely descriptive mark that has acquired secondary meaning. See H. R. Conf. Rep. No. 2322,
79th Cong., 2d Sess., 4 (1946) (explanatory statement of House managers). The Conference
Committee agreed to an amendment providing that no incontestable right can be acquired in a
mark that is a common descriptive, i. e., generic, term. Id., at 5. Congress could easily have
denied incontestability to merely descriptive marks as well as to generic marks had that been its
intention.
The Court of Appeals in discussing the offensive/defensive distinction observed that
incontestability protects a registrant against cancellation of his mark. 718 F. 2d, at 331. This
observation is incorrect with respect to marks that become generic or which otherwise may be
canceled at any time pursuant to §§ 14(c) and (e). Moreover, as applied to marks that are merely
descriptive, the approach of the Court of Appeals makes incontestable status superfluous.
Without regard to its incontestable status, a mark that has been registered five years is protected
from cancellation except on the grounds stated in §§ 14(c) and (e). Pursuant to § 14, a mark may
be canceled on the grounds that it is merely descriptive only if the petition to cancel is filed
within five years of the date of registration. § 14(a), 15 U. S. C. § 1064(a). The approach adopted
by the Court of Appeals implies that incontestability adds nothing to the protections against
cancellation already provided in § 14. The decision below not only lacks support in the words of
the statute; it effectively emasculates § 33(b) under the circumstances of this case.
III
Nothing in the legislative history of the Lanham Act supports a departure from the plain
language of the statutory provisions concerning incontestability. Indeed, a conclusion that
incontestable status can provide the basis for enforcement of the registrant's exclusive right to
use a trade or service mark promotes the goals of the statute. The Lanham Act provides national
protection of trademarks in order to secure to the owner of the mark the goodwill of his business
and to protect the ability of consumers to distinguish among competing producers. See S. Rep.
No. 1333, at 3, 5. National protection of trademarks is desirable, Congress concluded, because
trademarks foster competition and the maintenance of quality by securing to the producer the
benefits of good reputation. Id., at 4. The incontestability provisions, as the proponents of the
Lanham Act emphasized, provide a means for the registrant to quiet title in the ownership of his
mark. The opportunity to obtain incontestable status by satisfying the requirements of § 15 thus
encourages producers to cultivate the goodwill associated with a particular mark. This function
4
of the incontestability provisions would be utterly frustrated if the holder of an incontestable
mark could not enjoin infringement by others so long as they established that the mark would not
be registrable but for its incontestable status.
Respondent argues, however, that enforcing petitioner's mark would conflict with the
goals of the Lanham Act because the mark is merely descriptive and should never have been
registered in the first place. Representative Lanham, respondent notes, explained that the
defenses enumerated in § 33(b) were "not intended to enlarge, restrict, amend, or modify the
substantive law of trademarks either as set out in other sections of the act or as heretofore applied
by the courts under prior laws." 92 Cong. Rec. 7524 (1946). Respondent reasons that because the
Lanham Act did not alter the substantive law of trademarks, the incontestability provisions
cannot protect petitioner's use of the mark if it were not originally registrable. Moreover,
inasmuch as petitioner's mark is merely descriptive, respondent contends that enjoining others
from using the mark will not encourage competition by assisting consumers in their ability to
distinguish among competing producers.
These arguments are unpersuasive. Representative Lanham's remarks, if read in context,
clearly refer to the effect of the defenses enumerated in § 33(b),4 There is no question that the
Lanham Act altered existing law concerning trademark rights in several respects. For example, §
22, 15 U. S. C. § 1072, provides for constructive notice of registration and modifies the
common-law rule that allowed acquisition of concurrent rights by users in distinct geographic
areas if the subsequent user adopted the mark without knowledge of prior use. See Hanover Star
Milling Co. v. Metcalf, 240 U. S. 403, 415-416 (1916) (describing pre-Lanham Act law).
Similarly, § 14 cuts off certain grounds for cancellation five years after registration and thereby
modifies the previous rule that the validity of a trademark could be attacked at any time. See
White House Milk Products Co. v. Dwinell-Wright Co., 27 C. C. P. A. (Pat.) 1194, 111 F. 2d 490
(1940). Most significantly, Representative Lanham himself observed that incontestability was
one of "the valuable new rights created by the act." 92 Cong. Rec. 7524 (1946).
Respondent's argument that enforcing petitioner's mark will not promote the goals of the
Lanham Act is misdirected. Arguments similar to those now urged by respondent were in fact
considered by Congress in hearings on the Lanham Act. For example, the United States
Department of Justice opposed the incontestability provisions and expressly noted that a merely
descriptive mark might become incontestable. This result, the Department of Justice observed,
would "go beyond existing law in conferring unprecedented rights on trade-mark owners," and
would undesirably create an exclusive right to use language that is descriptive of a product.
These concerns were answered by proponents of the Lanham Act, who noted that a merely
descriptive mark cannot be registered unless the Commissioner finds that it has secondary
meaning. Moreover, a mark can be challenged for five years prior to its attaining incontestable
status. The supporters of the incontestability provisions further observed that a generic mark
cannot become incontestable and that § 33(b)(4) allows the nontrademark use of descriptive
terms used in an incontestable mark.
4
Representative Lanham made his remarks to clarify that the seven defenses enumerated in § 33(b) are not
substantive rules of law which go to the validity or enforceability of an incontestable mark. 92 Cong. Rec. 7524
(1946). Instead, the defenses affect the evidentiary status of registration where the owner claims the benefit of a
mark's incontestable status. If one of the defenses is established, registration constitutes only prima facie and not
conclusive evidence of the owner's right to exclusive use of the mark. Ibid. See also H. R. Conf. Rep. No. 2322, 79th
Cong., 2d Sess., 6 (1946) (explanatory statement of House managers).
5
The alternative of refusing to provide incontestable status for descriptive marks with
secondary meaning was expressly noted in the hearings on the Lanham Act. Also mentioned was
the possibility of including as a defense to infringement of an incontestable mark the "fact that a
mark is a descriptive, generic, or geographical term or device.". Congress, however, did not
adopt either of these alternatives. Instead, Congress expressly provided in §§ 33(b) and 15 that
an incontestable mark could be challenged on specified grounds, and the grounds identified by
Congress do not include mere descriptiveness.
IV
Respondent argues that the decision by the Court of Appeals should be upheld because
trademark registrations are issued by the Patent Office after an ex parte proceeding and generally
without inquiry into the merits of an application. This argument also unravels upon close
examination. The facts of this case belie the suggestion that registration is virtually automatic.
The Patent Office initially denied petitioner's application because the examiner considered the
mark to be merely descriptive. Petitioner sought reconsideration and successfully persuaded the
Patent Office that its mark was registrable.
More generally, respondent is simply wrong to suggest that third parties do not have an
opportunity to challenge applications for trademark registration. If the Patent Office examiner
determines that an applicant appears to be entitled to registration, the mark is published in the
Official Gazette. § 12(a), 15 U. S. C. § 1062(a). Within 30 days of publication, any person who
believes that he would be damaged by registration of the mark may file an opposition. § 13, 15 U.
S. C. § 1063. Registration of a mark provides constructive notice throughout the United States of
the registrant's claim to ownership. § 22, 15 U. S. C. § 1072. Within five years of registration,
any person who believes that he is or will be damaged by registration may seek to cancel a mark.
§ 14(a), 15 U. S. C. § 1064(a). A mark may be canceled at any time for certain specified grounds,
including that it was obtained fraudulently or has become generic. § 14(c), 15 U. S. C. § 1064(c).
The Lanham Act, as the dissent notes, post, at 217, authorizes courts to grant injunctions
"according to principles of equity." § 34, 15 U. S. C. § 1116. Neither respondent nor the opinion
of the Court of Appeals relies on this provision to support the holding below. Whatever the
precise boundaries of the courts' equitable power, we do not believe that it encompasses a
substantive challenge to the validity of an incontestable mark on the grounds that it lacks
secondary meaning. To conclude otherwise would expand the meaning of "equity" to the point of
vitiating the more specific provisions of the Lanham Act. 5 Similarly, the power of the courts to
cancel registrations and "to otherwise rectify the register," § 37, 15 U. S. C. § 1119, must be
subject to the specific provisions concerning incontestability. In effect, both respondent and the
dissent argue that these provisions offer insufficient protection against improper registration of a
merely descriptive mark, and therefore the validity of petitioner's mark may be challenged
notwithstanding its incontestable status. Our responsibility, however, is not to evaluate the
wisdom of the legislative determinations reflected in the statute, but instead to construe and
apply the provisions that Congress enacted.
5
We note, however, that we need not address in this case whether traditional equitable defenses such as estoppel or
laches are available in an action to enforce an incontestable mark. See generally Comment, Incontestable Trademark
Rights and Equitable Defenses in Infringement Litigation, 66 Minn. L. Rev. 1067 (1982).
6
VI
We conclude that the holder of a registered mark may rely on incontestability to enjoin
infringement and that such an action may not be defended on the grounds that the mark is merely
descriptive. Respondent urges that we nevertheless affirm the decision below based on the "prior
use" defense recognized by § 33(b)(5) of the Lanham Act. Alternatively, respondent argues that
there is no likelihood of confusion and therefore no infringement justifying injunctive relief. The
District Court rejected each of these arguments, but they were not addressed by the Court of
Appeals. That court may consider them on remand. The judgment of the Court of Appeals is
reversed, and the case is remanded for further proceedings consistent with this opinion.
It is so ordered.
7